WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Mpire Corporation v. Michael Frey Case No. D2009-0258 1. The Parties
The Complainant is Mpire Corporation, of Seattle, Washington, United States of America, represented by Black Lowe & Graham PLLC, United States of America.
The Respondent is Michael Frey of Birmingham, Midlothian, United Kingdom of Great Britain and Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2009. On February 26, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On February 27, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name. The Center sent an email communication to the Complainant on March 3, 2009 notifying the Complainant that the Complaint was administratively deficient and invited the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 6, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was March 26, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 27, 2009.
The Center appointed Harini Narayanswamy as the sole panelist in this matter on April 3, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant Mpire Corporation, is a company based in Seattle, Washington, in the United States of America. It is in the business of Internet advertising and provides Internet bloggers and publishers a means of generating revenue through online advertisements.
The Complainant uses the trademark WIDGETBUCKS for its business, which is registered as United State of America (“US”) Reg. No. 3,489,921, in International class 9. The mark was registered on August 19, 2008, and first used in commerce from October 2007.
The Complainant registered the domain name on July 17, 2007. The Respondent registered the domain name in the present dispute, (the Disputed Domain Name”), on October 16, 2007. 5. Parties' Contentions A. Complainant
The Complainant describes its business as developing and distributing online advertisement networks. It states that it provides an Internet advertising platform with proprietary technology that enables web publishers to make money from “cost-per-click” (CPC) and “cost-per- thousand page impressions” (CPM) earnings and from display advertisements.
The Complainant states that it conducts its primary business from its website at , and it serves over 1.5 billion advertisement impressions worldwide each month. According to the Complainant it is ranked among the top thirty advertisement networks by comScore.
Although the Respondent, Michael Frey, is the name of the registrant of the Disputed Domain Name on record, the Complainant alleges that the Respondent has used several different names such as, Elfrida Simanjuntak, Sondang Willborne and Suraja, in its communications.
The Complainant states that it uses its trademark WIDGETBUCKS for purposes other than its domain name, as evidenced by its website. The mark according to the Complainant is depicted in bubble lettering and the last letter “S” is replaced by a “$” sign. This distinctive stylized manner of depicting its mark is copyright protected, asserts the Complainant.
The Respondent's domain name, argues the Complainant, is the same as its mark, except for the missing letter ‘T'. The Complainant also draws attention to the fact that the Respondent's website uses the Complainant's trademark, “WIDGETBUCKS”, at least ten times, without authorization or license from the Complainant, and also uses its copyright protected distinctive stylized lettering.
The Complainant further states that the website linked to the Disputed Domain Name contains several links to other third party sites. One such link which contains numerous advertising links and links to third party websites is “” Although this website appears to be that of the Complainant's it is not its website, points out the Complainant.
According to the Complainant, the Respondent gets misdirected Internet traffic due to persons looking for the Complainant and who mistype the Complainant's name. The Respondent further uses the Disputed Domain Name for earning revenue from the revenue-earning feature of the Complainant's business. The Respondent gets this revenue in two ways: firstly, from click through advertisements and secondly by pressing the “Sign Up” button for obtaining referral bonus.
As evidence, the Complainant has provided a print out of the revenue that had accrued to the Respondent's account, which amounts to USD 142.42. The Complainant states that it cut off the Respondent's account and “fraudulent earnings” after it came to know of it.
The Complainant claims that it first became aware of the Respondent's activities on February 2, 2009, when a journalist called John Cook wrote a report about the Complainant in “”. The journalist who had sought to provide a link to the Complainant's site “www.”, had mistyped the name and users were misdirected to the Respondent's website. A reader pointed out the mistake to the journalist, who then corrected it.
Soon after this event, the Complainant states it contacted the Respondent to acquire the Disputed Domain Name. The Respondent was willing to transfer the Disputed Domain Name but asked for an amount of USD 5000 for the transfer.
On February 3, 2009, the Complainant claims, the same journalist wrote an article about his typosquatting experience. He described how he was misled and had mistaken the Disputed Domain Name as being associated with the Complainant and that he had unknowingly misdirected readers to the Disputed Domain Name. The journalist, states the Complainant, noted that the appearance, look and feel of the disputed domain name was so confusingly similar to that of Complainant's, that he believed the Disputed Domain Name belonged to the Complainant.
In response to the news article, an individual referring to himself as “Suraja”, contacted the journalist on his website and stated that he may be a cyber squatter. According to the Complainant “Suraja”, is none other than the Respondent, as “Suraja”, described details that could have been known only to the Respondent.
The Complainant's legal submissions are:
Firstly, the disputed domain name is confusingly similar to a mark in which it has rights. The Complainant is the registered proprietor of the mark, and has common law rights in the mark by virtue of continuous use for about two years. News articles indicate the Complainant is a successful award winning Internet based advertising entity. The Respondent's domain name omits the letter ‘T' from its mark, which is a deliberate attempt of ‘typosquatting” and the “look and feel” of the Respondent's website is similar to that of the Complainant's.
Secondly, the Complainant argues that the Respondent has no rights or legitimate interests for the reason that the Respondent has not been commonly known by the domain name, it has made no preparation to use the domain name with a bona fide offering of goods and services before notice of this dispute and the Respondent has not made legitimate noncommercial or fair use of the domain name.
Thirdly, the Respondent has registered and used the domain name in bad faith. The Respondent's attempt to sell the domain name is excess of out of pocket costs, deriving revenue from misdirect Internet traffic, using the disputed domain name for promoting interrelated advertisements, use of Complainant copyrighted material by the Respondent and finally the totality of circumstances show Respondent's bad faith intent to exploit and profit from the Complainant's mark.
The Complainant requests for transfer of the Disputed Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
The Policy requires the Complainant in a domain name dispute to establish the three elements enumerated under paragraph 4(a) of the Policy to obtain the remedy of transfer or cancellation of the domain name. These are:
(a) The domain name is identical or confusingly similar to a mark in which the Complainant has rights; and
(b) The Respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain name was registered and is being used in bad faith by the Respondent. A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires the Complainant to establish the Disputed Domain Name is identical or confusingly similar to a mark in which it has rights.
The mark in question here is WIDGETBUCKS. The Complainant has furnished evidence of its use of the WIDGETBUCKS mark in commerce. It has also clearly established its registered rights in the mark. The Panel also notes that the Complainant's domain name reflects its mark, and that it was registered prior to the registration of the Disputed Domain Name.
Given the Respondent's use of the Complainant's mark on its website, the Panel is convinced that the Respondent has intentionally registered the Disputed Domain Name as a confusingly similar variant of the Complainant's mark. “Widgebucks” is an obvious misspelling of the Complainant's mark WIDGETBUCKS. The Panel finds that the omission of the letter “T” in the Disputed Domain Name is a classic case of typo-squatting.
The Complainant has additionally provided actual evidence of user confusion resulting from typo-squatting. One specific instance of typo-squatting, which was clearly described in a published article, is submitted by the Complainant in the Complaint. Reproduced here is the extract of the article.
“I accidently linked to the site of WidgeBucks [Disputed Domain Name (notice the missing T). The WidgeBucks [Disputed Domain Name] site used the same coloring, logo and appeared to have a very similar business concept to that of WidgetBucks, the Seattle developer of online advertising widgets. It was close enough that it tricked me, even though I should have known something was up when I couldn't find a link to the parent company of WidgetBucks, Mpire.”
In the light of the above submissions and evidence, the Panel is convinced of the confusing similarity between the Disputed Domain Name and the Complainant's mark. The Panel finds that the requirements under paragraph 4(a)(i) of the Policy have been fulfilled. B. Rights or Legitimate Interest
The second element under paragraph 4(a)(ii) of the Policy requires the Complainant to make a prima facie case that the Respondent lacks rights and legitimate interests in the Disputed Domain Name.
The Panel finds that the Complainant has not granted any license or authorization to the Respondent to use its mark in any manner, nor is there any affiliation between the Complainant and the Respondent to justify the use of the Complainant's mark by the Respondent.
The Panel has considered all the submissions, evidence on record and the facts and circumstances of the case, and finds that the Respondent is not connected with the Complainant, but uses the Complainant's mark with an intention to derive advantage from user confusion. Such use by the Respondent is not legitimate use and does not confer any rights in favor of the Respondent.
The Respondent in these proceedings did not rebut the Complainant's allegations or evidence by filing a response. Hence no defense has been availed inter alia under paragraph 4 (c) of the Policy by the Respondent, to show any rights or legitimate interests.
Accordingly, the Panel finds that the Respondent lacks rights and legitimate interests in the domain name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The third element under paragraph 4(a)(iii) requires the Complainant to establish that the domain name was registered and used in bad faith.
The Panel finds that the Complainant has established its business reputation under the mark WIDGETBUCKS. This is evidenced by the news reports and articles, which show that an average person seeking the Complainant's online services would associate this trademark with the Complainant.
The Respondent has used the Complainant's mark several times on its website with the same stylized lettering as in the Complainant's mark. This clearly indicates that the Respondent ought to have been aware of the Complainant's mark. The Panel finds the choice of name is not coincidental but is an intentional use of a name that is identical or confusingly similar to the Complainant's mark.
The Panel finds that by using the Disputed Domain Name in this manner, the Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website, for commercial gain, and earning. Numerous cases have held that a Respondent who intentionally diverts Internet users to its website constitutes bad faith. See for instance F. Hoffmann-La Roche AG v. DOMIBOT,WIPO Case No. D2006-0327.
The Dispute Domain Name is also being used to direct users to other deceptively similar web pages that closely resemble the Complainant's and to many other sponsored links. While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.
The Panel notes that when the Complainant contacted the Respondent with an offer to acquire the Disputed Domain Name, the Respondent demanded a sum of USD 5000, which is in excess of out of-pocket expenses, directly related to the domain name.
Further the Respondent has admitted in his reply to the Complainant that he registered the domain name with a view to make money. From these facts it can be inferred that the Respondent has registered the Disputed Domain Name for the potential of selling it to the Complainant or a competitor and also as discussed, for its value of misleading Internet users. It is evident from the records that the Respondent registered the Domain Name with the Complainant in mind.
In the present case the Panel finds additional support for the inference of bad faith from the numerous pseudonyms used by the Respondent. The Panel finds this is an attempt by the Respondent to either evade or frustrate the process.
Respondents in domain name disputes try to evade legal action by adopting elusive methods. These could be through use of false names and false contact information at the time of registration, or by ‘ cyber flight', (an attempt to delay a UDRP proceeding by changing domain name registration details after knowing of the compliant, PREPADOM v. Domain Drop S.A. (PREPADOM-COM-DOM),WIPO Case No. D2006-0917). Use of different names by the Respondent, as in the present case, has been found to be indicating bad faith. See A, Inc. v. Lorna Kang a/k/a Yong Li a/k/a/ Mahmoud Nadim ak/a The Data in B's WHOIS Database is p a/k/a Amjad Kausar,WIPO Case No. D2005-0635.
The Panel finds the Complainant has put forward a strong case and agrees with the Complainant's argument that the totality of circumstances shows the Respondent's bad faith intent to exploit and profit from the Complainant's mark.
The Panel concludes that the requirements of Paragraph 4(a)(iii) of the Policy have been fulfilled. 7. Decision
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name , be transferred to the Complainant.
Harini Narayanswamy
Sole Panelist
Dated: April 17, 2009
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